Citigroup, Inc. v. Cenk yigitoglu
Claim Number: FA0903001250369
Complainant is Citigroup Inc. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <citikredi.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 5, 2009.
On March 3, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <citikredi.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 10, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 30, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@citikredi.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <citikredi.com> domain name is confusingly similar to Complainant’s CITI mark.
2. Respondent does not have any rights or legitimate interests in the <citikredi.com> domain name.
3. Respondent registered and used the <citikredi.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Citigroup, is a financial services company that markets its services under the CITI mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on December 8, 1981 (Reg. No. 1,181,467). Complainant also alleges that they registered the CITI mark with the Turkish trademark authorities on April 27, 1999 (Reg. No. 208,742). Complainant has used the mark continuously in commerce since at least as early as 1959, and now has over 1,400 branches and 3,800 ATMs in approximately 46 countries.
Respondent registered the <citikredi.com> domain name on January 30, 2009. The disputed domain name resolves to a website that contains adult-oriented pictures of celebrities.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in
the CITI mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc.,
FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance
Complainant contends that
Respondent’s <citikredi.com>
domain name is confusingly similar to its CITI mark. The <citikredi.com> domain name differs from Complainant’s mark in two ways:
(1) the term descriptive “kredi,” which is Turkish for “credit,” has been added
to the end of the mark; and (2) the generic top-level domain (“gTLD”) “.com”
has been added. The Panel finds that a
descriptive term, even if translated into another language, does not render a
domain name dissimilar to a mark.
Moreover, the Panel also finds that the addition of a gTLD does not
reduce the likelihood of confusion between the domain name and the mark,
because every domain name must contain a top-level domain. Therefore, because the changes made to the
disputed domain name neither minimize nor eliminate the likelihood of confusion
between Complainant’s mark and the disputed domain name, the Panel finds that
Respondent’s disputed domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See
Sutton Group Fin. Servs. Ltd. v.
Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name
<suttonpromo.com> is confusingly similar to the SUTTON mark because the
addition of descriptive or non-distinctive elements to the distinctive element
in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Google, Inc.
v. disk prazer, FA 1245392 (Nat.
Arb. Forum Mar. 24, 2009) (finding that even if a term is translated into
Portuguese, its addition fails to distinguish a domain name from a mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web
Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established
that the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant contends that Respondent is not commonly known
by the <citikredi.com> domain name nor has it ever been the owner
or licensee of the CITI mark. The WHOIS record for the disputed domain name
lists Respondent as “cenk yigitoglu.” Respondent has failed to show any evidence
contrary to Complainant’s contentions, and so, in light of the evidence
presented, the Panel finds that Respondent is not commonly known by the <citikredi.com>
domain name pursuant
to Policy ¶ 4(c)(ii).
See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see
also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent maintains a website at the <citikredi.com> domain name that contains adult-oriented pictures of celebrities. The Panel finds that incorporating a mark into a domain name with the purpose of diverting Internet users to a website that features adult-oriented content is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <citikredi.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website that featured numerous pop-up advertisements for commercial goods and sexually explicit websites).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent financially benefits because of the diversion of Internet users to Respondent’s website, through the click-through fees paid to Respondent whenever Internet users click on the links on Respondent’s website. The Panel finds this resulting likelihood of confusion for Respondent’s own commercial gain to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant also contends that Respondent is hosting adult-oriented pictures of celebrities at the website that resolves from the disputed domain name. The Panel finds that hosting adult-oriented content is evidence that a disputed domain name is being used in bad faith, and that therefore, Respondent is using the <citikredi.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to an adult-oriented site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <citikredi.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: April 21, 2009
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